The Complainant is Quton Seed Company (Private) Limited of Borrowdale, Zimbabwe, represented internally.
The Respondent is DNS Administrator, Cykon Technology Limited of Hong Kong, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2015. On June 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the annexes to the Complaint, the Complainant submitted a complete set of annexes to the Complaint on June 19, 2015. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 29, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2015. On July 19, 2015, the Respondent requested to extend the Response due date. On July 20, 2015, the Center granted an extension to the Response due date to July 24, 2015. The Response was filed with the Center on July 23, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 4, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 14, 2015, the Panel issued the following Panel Order:
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules’), the Panel may, at its sole discretion request, in addition to the Complaint and the Response, further statements or documents from either of the Parties.
The Panel notes that
1) The Complaint as filed in this matter asserts that the Complainant has common law or unregistered mark rights in the word QUTON (the ‘QUTON Mark’) but has provided no evidence in support of its claims, bearing in mind the existing case law relating to the establishment of common law rights set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (‘WIPO Overview 2.0’).
2) The Complaint as filed asserts that the Respondent registered (the ‘Domain Name’) to take advantage of the Complainant’s reputation in the QUTON Mark, but has provided no evidence in support of its claims, bearing in mind the existing case law relating to the finding of bad faith before registered or unregistered trade marks were required as set out in the WIPO Overview 2.0, see Section 1.7:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
3) The Response as filed asserts that the Respondent registered the Domain Name independently of any connection with the Complainant in 2010, however has provided no evidence in support of its claims to independent registration, such as company records, internal discussions or a pattern of company behavior.
Therefore the Panel makes the following orders:
1) The Complainant has until August 20, 2015 to make further submissions or file any additional evidence that it sees fit (including technical or affidavit evidence):
a) to support its claims of common law rights in the QUTON Mark;
b) to support its claims that the Respondent registered the Domain Name to take advantage of the Complainant’s reputation in the QUTON Mark.
The additional evidence/submissions should be served on the Respondent using the e-mail address […]@.
2) The Respondent has until August 20, 2015 to make further submissions or file any additional evidence that it sees fit (including technical or affidavit evidence) to support its claims of independent creation and registration of the Domain Name in 2010. The additional evidence/submissions should be served on the Complainant using the e-mail address […]@.
3) Each Party shall thereafter have an opportunity to provide any submission or any evidence in reply it may choose to make regarding the other party’s additional evidence/submissions in response to this Panel Order, by August 25, 2015.
4) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to domain.disputes@ for forwarding to the Panel.
5) The Panel will deliver its decision on or before August 28, 2015.”
On August 20, 2015, the Respondent filed its additional submission. The Complainant filed part of its additional submission on August 20, 2015, but due to human error, did not file its complete additional submission until August 21, 2015. The Respondent filed a further submission on August 25, 2015. The Complainant did not file any further submission. 4. Factual Background
The Complainant is a Zimbabwean company that supplies cotton planting seeds. The Complainant has been known as the Quton Seed Company since October 29, 1999.
The Complainant does not own any registered trade marks but asserts that it has been using the word “Quton” (the “QUTON Mark”) as a trade mark in respect of its cotton planting seeds. The Complainant has filed an application to register the QUTON Mark as a trade mark with the African Regional Intellectual Property Organization.
The Domain Name was registered by the Respondent on February 13, 2010. It currently resolves to a website (the “Respondent’s Website”), which is a parking page with a number of what appear to be “pay-per-click” links including links for various types of mobile phone services. The Respondent’s Website also contains the statement “The domain may be for sale by its owner”. The Respondent’s Website does not refer to the Complainant in any way. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s QUTON Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant has used the QUTON Mark for cotton seeds since 1995 and its present business name was registered by the Registrar under the Companies Act in Zimbabwe in 1999. The Complainant filed an application with the African Regional Intellectual Property Organization on June 16, 2014 to register the QUTON Mark and the application is in process. The Domain Name is identical or confusingly similar to the QUTON Mark. The QUTON Mark is recognized for cotton seeds as the Complainant has spent between USD 25,000 and USD 40,000 annually in advertising its product since 2011 and has sold between 5,000 and 13,000 combined metric tonnes of seeds each year between 1996 and 2014 in Zimbabwe, Malawi, Uganda, Mozambique, Swaziland and Zambia. The QUTON Mark has been prominently displayed on printed materials which have been widely distributed through Malawi, Uganda, Mozambique, Swaziland and Zambia.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not associated with the Complainant, has never obtained any right or licence to use the QUTON Mark, and is not commonly known by the Domain Name. The Respondent does not use the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent has registered the Domain Name to get undue advantage/benefit by selling the Domain Name. The Respondent has offered the Domain Name for sale which clearly shows that the Respondent does not use “Quton” as a product name or trade name. By reason of the facts in this case the Respondent has registered and used the Domain Name in bad faith. B. Respondent
The Complainant has no trade mark rights in the QUTON Mark. There is no evidence of any national or state registrations and no evidence of common law rights. The evidence as to sales and advertising provided by the Complainant in its supplemental submission is not certified and should not be relied upon by the Panel. The Complainant has also failed to show any evidence of how its advertising campaign was conducted, who the audience was, which companies or products were being promoted, what were the marketing campaign results, etc. The Complainant refers to its domain name . However this domain name was only registered on June 6, 2014, four years after the Respondent registered the Domain Name, and does not resolve to an active website.
The Respondent was registered as a limited liability company in Hong Kong, China in 1997 and registered the Domain Name in 2010. The Respondent registered the Domain Name because it independently invented the word “quton”, similar to the Respondent’s company name “Cykon” and other brands the Respondent has created. The word “quton” was invented by the Respondent as a variant of “cut on”. The Domain Name is currently parked for future use and the advertisements on the Respondent’s Website are clearly unrelated to the Complainant.
The Respondent was not aware of the Complainant at the time it registered the Domain Name. Indeed the Domain Name was registered four years before the Complainant applied to register the QUTON Mark. The Respondent has never attempted to disrupt the Complainant’s business; it is located in a different part of the world to the Complainant and operates in a different industry. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant does not own a registered trade mark for the QUTON Mark. It has applied for such a mark but the registration has not yet been approved by the African Regional Intellectual Property Organization. It is therefore necessary for it to show that it has common law or unregistered trade mark rights in the QUTON Mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says, in response to the question “1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” that:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
In the present case the Complainant has provided evidence that it has as a registered business name “Quton Seed Company (Private) Limited”. It has also provided evidence that it has spent USD 25,000 and USD 40,000 annually in advertising its product since 2011 and has sold between 5,000 and 13,000 combined metric tonnes of seeds each year under the QUTON Mark between 1996 and 2014 in Zimbabwe, Malawi, Uganda, Mozambique, Swaziland and Zambia. The Panel notes that, while such figures should include specific documentary evidence as to the actual use of the QUTON Mark in advertising (e.g., pictures of the asserted clothing, signage, event sponsorship, etc.), on the balance of probabilities, the Panel is prepared to conclude that the QUTON Mark has become a distinctive identifier associated with the Complainant’s seed products which is sufficient to show that it has unregistered rights in the QUTON Mark.
The Domain Name consists of the QUTON Mark and the generic Top-Level Domain “.com”. The Panel finds that the Domain Name is identical to the Complainant’s QUTON Mark. Consequently, the requirements of paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the QUTON Mark or a mark similar to the QUTON Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name, indeed the Respondent has parked the Domain Name for five years and uses it for advertisements. Such use, by itself does not grant rights or legitimate interests.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name and the Respondent has not succeeded in showing demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If either of the required elements are not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the domain name because Complainant failed to prove bad faith registration).
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trade mark owners from registering a corresponding domain name. (The Panel notes however that the Respondent has been a party in four prior UDRP cases (three before the Center) and has a 50/50 record in those cases.) Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors and the other domain names registered by the Respondent do not, on the evidence before the Panel, appear to correspond to particular brands unconnected to the Respondent.
The Panel finds that the Complainant has not satisfied the burden of proof to show that:
a) the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website; or
b) there are circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
The Panel reaches this conclusion, with some difficulty, for the following reasons:
a) The Complainant does not have a registered trade mark for the QUTON Mark. Equally, the Complainant has only provided evidence of advertising expenditures from 2011 to the present, and provides only limited figures relating to its sales from 1995 to 2010. The Panel therefore cannot conclude that the Complainant had unregistered trade mark rights in 2010, the date of the registration of the Domain Name.
The WIPO Overview 2.0 states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trademark rights, such cases typically involve situations where, at the time of registration the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.
b) While the Complainant was selling what appears to be a considerable volume of cotton seeds in 2010, such seeds were only sold in Zimbabwe and neighboring African countries. The Complainant has acknowledged that any reputation in the QUTON Mark does not presently extend beyond Zimbabwe, Malawi, Uganda, Mozambique, Swaziland and Zambia and it can be inferred that this was also the case at the time of registration.
c) The Complainant does not appear to maintain an active website (notwithstanding its use of […]@ (which was only first registered in June 2014) for email purposes) and there is no evidence before the Panel that the Complainant had any online presence in 2010, such that the Panel can conclude that the Respondent must have been aware of the Complainant.
d) The Respondent is located in Hong Kong, China, and based on the material before the Panel, has no connection with Africa or the cotton seed industry generally.
e) There is no evidence, based on the content of the Respondent’s Website or in the case file generally, that the Respondent has ever targeted the Complainant or its industry. There is no correspondence between the Parties that would suggest that the Respondent was aware of the Complainant at the time of registration or at any point prior to the proceedings.
f) On the other hand, the Domain Name consists of the word “quton” which seems to be a coined word. It thus seems improbable that the two Parties, on opposite sides of the world, would independently come up with the same word. The Respondent has provided an explanation for its registration of the word, being that it is in the business of creating new online brands and indeed provides examples of other online brands that the Respondent has created, such as CYKON, LIPSY, IHOST and NETEASILY. However, despite being provided with the opportunity in the Panel Order the Respondent has provided no supporting evidence, such as emails at the time of creation or corporate documents to support its claims of independent creation.
In short, the Panel must determine which of the two improbable situations has occurred in order to determine whether the Respondent registered the Domain Name in bad faith:
a) The Hong Kong, China-based Respondent registered the Domain Name in 2010 to take advantage of the Zimbabwe-based Complainant and its QUTON Mark despite the fact that the Complainant may not have had any mark rights in the QUTON Mark, had no online presence, did not market its products and, to the extent it had any reputation in the QUTON Mark, such reputation would have been limited to the cotton-seed industry in Southern Africa. The Respondent then maintained a website for five years that made no reference to the Complainant and its industry; or
b) The Respondent independently created the QUTON name, despite the absence of corporate documents to this effect.
The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus. It has provided no evidence that the Respondent knew or should have known of the Complainant at the time of Registration and that the aim of the registration was to take advantage of the confusion between the Domain Name and any potential Complainant rights. The Respondent has provided a reason for registering the Domain Name and some (limited) arguments (being that it is in the business of creating new brands (and has provided examples of the new brands it created)) in support of its claims. The Respondent’s conduct in holding the Domain Name for five years without attempting to obviously target the Complainant or contact the Complainant in any way provides further support for its assertion that it did not register the Domain Name with any awareness of the Complainant.
The Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace,WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). The Panel has noted its concern that neither Party has put on sufficient evidence showing whether the registration of the Domain Name was in bad faith. The Panel finds that the Respondent’s rather imprecise assertion that it registered the Domain Name “as early as February 13, 2010” is particularly suspect. Equally suspect is the Respondent’s claim that it registers domain names “from time to time” and “for various projects”, listing a mere six examples of its registrations when it is apparent from previous UDRP decisions involving the Respondent that the Respondent may own as many as 45,000 domain names (see Saurikit, LLC v. Cykon Technology Limited;WIPO Case No. D2010-2193). Why the Respondent would not mention the scale of its operations is slightly concerning, especially given the obligation some panels have found to apply to “domainers” holding large portfolios of domain names (see WIPO Overview 2.0, see Section 3.4). However the onus of proof on this element ultimately rests with the Complainant. In order to reach a conclusion that the Respondent had registered the Domain Name in bad faith, the Panel would have to make significant findings relating to the credit of the Respondent’s claims of independent creation in the absence of an opportunity to properly test such evidence. Such factual disputes are more appropriately dealt with through the courts.
In this case the Panel has been asked to infer the intention of the Respondent in registering the Domain Name five years ago, in the absence of any evidence from the Complainant showing any reputation in the QUTON Mark in 2010 or any evidence that the Respondent was aware of the Complainant. In the present case, by reason of the limited evidence provided by the Parties, the Panel finds that the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith. In the absence of a finding that the Domain Name was registered in bad faith it is not necessary to reach a conclusion on whether the Domain Name is used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: August 27, 2015
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